2007 Sonderausgabe Nr. 5 ABl. EPA / Special edition No. 5 OJ EPO / Edition spéciale n° 5 JO OEB 1 Foreword The revision of the Articles of the EPC by the Conference of the Contracting States held in November 2000 entailed a complete overhaul of the EPC Implementing Regulations. This overhaul has been carried out in two stages: x In the wake of the November 2000 Conference, new Implementing Regulations to the EPC 2000 were adopted by the Administrative Council on 12.12.2002* * See Special edition n° 1 of the OJ EPO 2003, pages 74-158 x Considering that amendments of the Implementing Regulations to the EPC 2000 were necessary and useful in the light of more recent developments, the Administrative Council amended the Implementing Regulations to the EPC 2000 on 7.12.2006** ** See Special edition n° 1 of the OJ EPO 2007, pages 103-195 This latter version of the Implementing Regulations is the one which enters into force together with the EPC 2000, on 13.12.2007. The present publication compares the Implementing Regulations to the EPC 1973 with the Implementing Regulations to the EPC 2000, giving an overview of the extent of the changes. In addition, consolidated explanatory remarks have been included. They are based on the following documents which date from the years 2002 and 2006 respectively: x CA/PL 5/02 Rev. 1 Add. 1; CA/PL PV 19 x CA/PL 11/06, CA/PL 17/06, CA/PL 29/06 Add. 1; CA/PL PV 29, CA/PL PV 30, CA/PL PV 31 The above documents are available on-line at http://www.epo.org/patents/law/legislative-initiatives/epc2000/travaux.html The two-stage revision process of the Rules (2002 and 2006) has of necessity entailed some redundancy in the explanatory remarks. For the present purpose, the explanatory remarks have been shortened and cautiously updated, especially in the instances where changes made in 2002 were undone or otherwise adapted in 2006. The present document is intended for study purposes only and does not form part of the Travaux préparatoires to the EPC 2000 2 Sonderausgabe Nr. 5 ABl. EPA / Special edition No. 5 OJ EPO / Edition spéciale n° 5 JO OEB 2007 Guidance for the reader In the synoptic comparison between the Rules of the EPC 1973 and the Rules of the EPC 2000, the font features bold and […] have been used in the right-hand column to indicate changes as compared to the Rules of the EPC 1973. Example Rule 6 […] Filing of translations and reduction of fees Rule 6 EPC 1973 Rule 6 EPC 2000 (1) The translation referred to in Article 14, (1) A translation under Article 14, paragraph 2, paragraph 2, must be filed within three months after shall be filed within two months of […] filing […] the filing of the European patent application, but no the European patent application […]. later than thirteen months after the date of priority. (2) The translation referred to in Article 14, (2) A translation under Article 14, paragraph 4, paragraph 4, must be filed within one month of the shall be filed within one month of […] filing […] the filing of the document. Where the document is a document. This shall also apply to requests notice of opposition or an appeal, this period shall under Article 105a. Where the document is a be extended where appropriate to the end of the notice of opposition or […] appeal, or a statement opposition period or appeal period. of grounds of appeal, or a petition for review, the translation may be filed within the period for filing such a notice or statement or petition, if that period expires later. Abbreviations and references EPC 1973 refers to the Articles of the EPC and the Implementing Regulations in force until the entry into force of the EPC 2000, that is x the European Patent Convention of 5 October 1973, as amended by the Act revising Article 63 EPC of 17 December 1991 and by Decisions of the Administrative Council of the European Patent Organisation of 21 December 1978, 13 December 1994, 20 October 1995, 5 December 1996, 10 December 1998 and 27 October 2005 and x the Implementing regulations to the European Patent Convention of 5 October 1973, as last amended by Decision of the Administrative Council of 9 December 2004 EPC 2000 refers to x the Articles of the EPC 2000 adopted by the Diplomatic Conference by the Revision Act of 29 November 2000*, in the text drawn up by the Administrative Council by Decision of 28 June 2001** x the Implementing Regulations to the EPC 2000 as amended by Decision of the Administrative Council of 7 December 2006*** * see Special edition n° 4 of the OJ EPO 2001, pages 3-51 ** see Special edition n° 4 of the OJ EPO 2001, pages 54-133 *** see Special edition n° 1 of the OJ EPO 2007, pages 103-195 Transitional provisions were adopted by Decision of the Administrative Council of 28 June 2001* * see Special edition n° 1 of the OJ EPO 2007, pages 196-198 The Patent Law Treaty (PLT), of 1 June 2000, is available at http://www.wipo.int/treaties/en/ip/plt/index.html 2007 Sonderausgabe Nr. 5 ABl. EPA / Special edition No. 5 OJ EPO / Edition spéciale n° 5 JO OEB 3 Synoptic presentation of the Implementing Regulations to the EPC 1973 and the Implementing Regulations to the EPC 2000, including explanatory remarks Contents Synoptic presentation EPC 1973/2000 – Part II : The Implementing Regulations 4 Appendix 1: Explanatory remarks – General points 259 Appendix 2: Transitional provisions 261 Appendix 3: Cross-reference index 263 Appendix 4: Rules deleted from the Implementing Regulations 267 4 Sonderausgabe Nr. 5 ABl. EPA / Special edition No. 5 OJ EPO / Edition spéciale n° 5 JO OEB 2007 PART I CHAPTER I RULE 1 (Explanatory remarks 2006: CA/PL 17/06, CA/PL 29/06 Add.1) New Rule 1 EPC 2000 has been inserted to adapt the Implementing Regulations to the possibility of electronic filing. It specifies what documents fulfil the requirement to use the written form. (In the Patent Law Committee 2006: CA/PL PV 30, points 58-73, CA/PL PV 31, points 5-9 and Annex 2, page 24) Discussion on the implications of the proposal to use the terms "on paper or on screen" (in particular as regards three dimensional pictures) in Rule 1 EPC 2000. RULE 2 EPC (Explanatory remarks 2006: CA/PL 17/06, CA/PL 29/06 Add.1) New Rule 2 EPC 2000 gives the option of electronic filing an explicit place in the Implementing Regulations. Under Rule 2(1), second sentence, EPC 2000, the President of the EPO is responsible for deciding through what route and in what form, and in particular by what technical means, documents may be filed which fulfil the requirement to use the written form. Rule 2(2) EPC 2000 deals with the signature of documents. Relevant decisions from the President of the EPO and notices from the EPO Decision dated 12 July 2007 concerning the filing of patent applications and other documents by facsimile, Special edition No. 3, OJ EPO 2007, 7, A.3 Decision dated 12 July 2007 concerning the electronic filing of patent applications and other documents, Special edition No. 3, OJ EPO 2007, 12, A.4 Decision dated 12 July 2007 concerning the electronic signatures, data carriers and software to be used for the electronic filing of patent applications and other documents, Special edition No. 3, OJ EPO 2007, 17, A.5 2007 Sonderausgabe Nr. 5 ABl. EPA / Special edition No. 5 OJ EPO / Edition spéciale n° 5 JO OEB 5 PART I IMPLEMENTING REGULATIONS TO PART I OF THE CONVENTION Chapter I General provisions Rule 1 Written proceedings EPC 1973 Rule 1 EPC 2000 The EPC 1973 did not contain an equivalent In written proceedings before the European provision. Patent Office, the requirement to use the written form shall be satisfied if the content of the documents can be reproduced in a legible form on paper. Rule 2 Filing of and formal requirements for documents EPC 1973 Rule 2 EPC 2000 The EPC 1973 did not contain an equivalent (1) In proceedings before the European provision Patent Office, documents may be filed by delivery by hand, by post or by technical means of communication. The President of the European Patent Office shall lay down the details and conditions and, where appropriate, any special formal or technical requirements for the filing of documents. In particular, he may specify that confirmation must be supplied. If such confirmation is not supplied in due time, the European patent application shall be refused; documents filed subsequently shall be deemed not to have been received. (2) Where the Convention provides that a document must be signed, the authenticity of the document may be confirmed by handwritten signature or other appropriate means the use of which has been permitted by the President of the European Patent Office. A document authenticated by such other means shall be deemed to meet the legal requirements of signature in the same way as a document bearing a handwritten signature which has been filed in paper form. 6 Sonderausgabe Nr. 5 ABl. EPA / Special edition No. 5 OJ EPO / Edition spéciale n° 5 JO OEB 2007 RULE 3 EPC 2000 (Explanatory remarks 2002: CA/PL 5/02 Rev. 1 Add. 1; discussion in the Patent Law Committee: CA/PL PV 19, point 8) Rule 1 EPC 1973 has been streamlined and its wording aligned with the style of the EPC 2000. It is renumbered as Rule 3 EPC 2000.